Rodney Greenv.Tensar International Corporation

Trademark Trial and Appeal Board

May 25, 2021

92068730 (T.T.A.B. May. 25, 2021)

This Opinion is Not a
Precedent of the TTAB

Hearing Date: May 4, 2021 Mailed: May 25, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Rodney Green

v.

Tensar International Corporation
_____

Cancellation No. 92068730
_____

Warren V. Norred
for Rodney Green.

Harvey B. Jacobson, Jr. and Leesa N. Weiss of Jacobson Holman PLLC
for Tensar International Corporation.
_____

Before Mermelstein, Adlin and Hudis,
Administrative Trademark Judges.

Opinion by Hudis, Administrative Trademark Judge:
Tensar International Corporation (“Respondent”) owns a Principal Register
registration for the mark EARTHLOCK (in standard characters) for:
Plastic sheet materials for construction; plastic mesh materials for
asphalt and concrete reinforcement, and construction of civil
engineering structures, in International Class 17, and
Soil reinforcement mesh and soil stabilization mesh made of plastic; soil
erosion control structures, namely, gabions and mattresses constructed
Cancellation No. 92068730
- 2 -

of plastic mesh; plastic mesh material for construction of civil
engineering structures, in International Class 19.1
In his Petition for Cancellation,2 Rodney Green (“Petitioner”) seeks cancellation of
Respondent’s registration of the EARTHLOCK mark under Trademark Act Section
2(d), 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied to the goods
identified in the registration, so resembles Petitioner’s common law EARTHLOK
mark, used in connection with soil stabilizers for use in road construction, and related
services, as to be likely to cause confusion, mistake, or to deceive.3
Petitioner also asserts in his Petition for Cancellation that Respondent
fraudulently procured its registration for the EARTHLOCK mark, in derogation of
Trademark Act Section 14(3), 15 U.S.C. § 1064(3). However, Petitioner did not pursue
the fraud claim in its trial brief. This claim is therefore forfeited. See Alcatraz Media,
Inc. v. Chesapeake Marine Tour Inc., 107 USPQ2d 1750, 1753 (TTAB 2013), aff’d

1 Registration No. 5257580 was issued on August 1, 2017.
2 1 TTABVUE. References to the pleadings, the evidence of record and the parties’ briefs refer
to the Board’s TTABVUE docket system. Coming before the designation TTABVUE is the
docket entry number, and coming after this designation are the page and paragraph
references, if applicable.
3 It was not entirely clear to us from a reading of the Petition for Cancellation the nature of
the “services” promoted, rendered and sold in connection with Petitioner’s EARTHLOK mark.
Implied consent to the trial of an issue will be found, however, where the non-offering party
(1) raised no objection to the introduction of evidence on the issue, and (2) was fairly apprised
that the evidence was being offered in support of the issue. Citigroup Inc. v. Capital City
Bank Grp., Inc., 94 USPQ2d 1645, 1656 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253
(Fed. Cir. 2011). TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)
§ 507.03(b) (2020). We find Petitioner’s use of EARTHLOK as a service mark was tried by
implied consent – by way of Petitioner’s introduction evidence on this issue without
Respondent’s objection, as well as by a discussion of this issue in both parties’ trial briefs.
Petitioner’s Brief, 35 TTABVUE 8-10, 13, 14, 16-18; Respondent’s Brief, 37 TTABVUE 9, 10,
23, 26-29, 34, 35, 41, 46, 47; Green Decl, 17 TTABVUE 3-4, ¶¶ 4, 5, 8, and attached exhibits.
Cancellation No. 92068730
- 3 -

mem., 565 F. App’x 900 (Fed. Cir. 2014); Harry Winston, Inc. v. Bruce Winston Gem
Corp., 111 USPQ2d 1419, 1422 (TTAB 2014).
Applicant denied the salient allegations of the Notice of Opposition in its Answer.4
Respondent also asserted the putative “affirmative defenses” of failure to state a
claim and unclean hands. Failure to state a claim upon which relief may be granted
is not an affirmative defense. John W. Carson Found. v. Toilets.com, Inc., 94 USPQ2d
1942, 1949 (TTAB 2010). This defense is therefore stricken.5
We also strike Respondent’s unclean hands defense because as pleaded this
defense does not include the purported acts of misconduct on which it would be based.
See, e.g., Midwest Plastic Fabricators Inc. v. Underwriters Labs. Inc., 5 USPQ2d 1067,
1069 (TTAB 1987) (“[R]espondent’s … defense does not include allegations that state
a defense of unclean hands. There are no specific allegations of conduct by petitioner
that, if proved, would prevent petitioner from prevailing on its claim; instead, the
allegations … are either unclear, non-specific, irrelevant to a pleading of unclean

4 Answer, 5 TTABVUE.
5 An affirmative defense assumes the allegations in the complaint to be true but,
nevertheless, constitutes a defense to the allegations in the complaint. An affirmative defense
does not negate the elements of the cause of action; it is an explanation that bars the claim.
Blackhorse, 98 USPQ2d at 1637 (citing Gwin v. Curry, 161 F.R.D. 70, 71 (N.D. Ill. 1995)) (the
affirmative defense concept codifies the common law plea in confession and avoidance: “Each
defendant either expressly or impliedly treats the factual allegations in a complaint as true,
but then goes on to assert new matter that eliminates or limits the defendant's ordinary
liability stemming from those allegations.”). See also Parkinson v. DOJ, 874 F.3d 710, 720-
721 n.9 (Fed. Cir. 2017) (quoting Affirmative Defense, under Defense, BLACK’S LAW
DICTIONARY (10th ed. 2014) (“A defendant’s assertion of facts and arguments that, if true,
will defeat the plaintiff’s or prosecution’s claim, even if all the allegations in the complaint
are true.”)); City of London Distillery, Ltd. v. Hayman Grp. Ltd., 2020 USPQ2d 11487, *14
(TTAB 2020).

Cancellation No. 92068730
- 4 -

hands, or merely conclusory in nature.”). In any event, Respondent’s unclean hands
defense was directed solely at Petitioner’s fraud claim, which Petitioner forfeited.
Therefore, Respondent’s unclean hands defense is moot.
The case is fully briefed. The parties participated in an oral hearing on May 4,
2021. Petitioner bears the burden of proving his Trademark Act Section 2(d) claim by
a preponderance of the evidence. See Martahus v. Video Duplication Svcs. Inc., 3 F.3d
417, 27 USPQ2d 1846, 1850 (Fed. Cir. 1993). Having considered the evidentiary
record, the parties’ arguments and applicable authorities, as explained below we find
that Petitioner has carried this burden and grant the petition.
I. The Evidentiary Record
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of Respondent’s involved registration. In addition, the
parties introduced the following evidence:
A. Petitioner’s Evidence
 Petitioner’s Notice of Reliance on the transcript from the discovery deposition
of Derek Wiatrek, Regional Sales Manager for the Central Texas Region of
Respondent (“Wiatrek Depo”), with exhibits (13 TTABVUE).
 Petitioner’s Notice of Reliance on the file history of the application to register
Petitioner’s Mark, EARTHLOK, Application Ser. No. 87675458 (“EARTHLOK
NOR”) (14 TTABVUE).
 Petitioner’s Notice of Reliance on the file history of the registration for
Respondent’s Mark, EARTHLOCK, Registration No. 5257580 (“EARTHLOCK
NOR”) (15 TTABVUE).6
 Petitioner’s Testimony Declaration (I) of Donyle Ford, Chief Financial Officer
of New Earthlok, LLC (“Ford Decl I”) (16 TTABVUE).

6 Petitioner did not need to make the EARTHLOCK registration file history of record. As we
stated above, the file for this registration is automatically of record. Trademark Rule 2.122(b).
Cancellation No. 92068730
- 5 -

 Petitioner’s Testimony Declaration of Rodney Green, submitted in his
individual capacity as Petitioner and as Chief Executive Officer of New
Earthlok, LLC (“Green Decl”), with exhibits (17 TTABVUE).
 Petitioner’s Testimony Declaration (II) of Donyle Ford (“Ford Decl II”) (26
TTABVUE).
B. Respondent’s Evidence
 Respondent’s Testimony Declaration of Robert Briggs, its Executive Vice
President, General Counsel, and Secretary (“Briggs Decl”), with exhibits (31
TTABVUE).
 Respondent’s Testimony Declaration of Joseph Cavanaugh, PE, its Executive
Vice President, Technology (“Cavanaugh Decl”), with exhibits (32 TTABVUE).
 Respondent’s Testimony Declaration of John Blackwelder, its former (retired)
Director – Commodity Business Unit, and former Director for Market
Development (“Blackwelder Decl”), with exhibits (33 TTABVUE).
C. Petitioner’s Rebuttal Evidence
 Petitioner’s Rebuttal Testimony Declaration of Rodney Green (“Green Rebuttal
Decl”) (34 TTABVUE).
D. Parties’ Evidentiary Stipulation
 Parties’ Stipulation regarding the admissibility of the transcript and exhibits
from the discovery deposition of Derek Wiatrek (“Wiatrek Stip”), (28
TTABVUE).
II. Respondent’s Motion to Strike Wiatrek Discovery Deposition
Transcript and Exhibits
Before considering the merits of this proceeding, we address Respondent’s motion
to strike the transcript and exhibits from the discovery deposition of Derek Wiatrek.
Pursuant to the Board’s Discovery Order of July 3, 2019,7 Petitioner was granted an
extended period, until August 9, 2019, to notice and take discovery depositions.
Petitioner took the discovery deposition of Mr. Wiatrek, Regional Sales Manager for

7 Board Order, 12 TTABVUE 13-14.
Cancellation No. 92068730
- 6 -

the Central Texas Region of Respondent, within the allotted time to do so. As noted
above, Petitioner filed (under cover of a Notice of Reliance) the transcript and exhibits
from Mr. Wiatrek’s discovery deposition during Petitioner’s testimony period.
Shortly after Petitioner filed with the Board the transcript and exhibits from Mr.
Wiatrek’s discovery deposition, Respondent moved to strike this evidence from the
record.8 Respondent argues that Mr. Wiatrek is not a party to, or officer, director or
managing agent of, Respondent such that his discovery deposition could be offered
into evidence by Petitioner pursuant to Fed. R. Civ. P. 30(b)(6) or 31(a).9
Respondent repeated and continued this argument in its trial brief,10 adding that
Mr. Wiatrek is an ordinary employee, acting in an inferior capacity and under the
direction and control of superior authority. Moreover, Mr. Wiatrek does not supervise
or direct the work of any employees, and he does not report to Respondent’s corporate
offices with any regularity. Further, Mr. Wiatrek’s work does not involve the
promotion or sales of any of Respondent’s EARTHLOCK products.11
Notwithstanding Respondent’s arguments, on April 21, 2020 the parties entered
into, and Petitioner filed with the Board, a Stipulation12 providing as follows:
1. Petitioner and Respondent in the above-identified proceeding, by and
through their respective attorneys, hereby stipulate that the Parties
may use as trial evidence the discovery deposition of Derek Wiatrek

8 Respondent’s Motion to Strike, 18 TTABVUE.
9 Id. at 2-3
10 Respondent’s Brief, 37 TTABVUE 53.
11 Id. at 53-54.
12 Wiatrek Stip, 28 TTABVUE 2.
Cancellation No. 92068730
- 7 -

taken on August 9, 2019 and already in the Board’s file as 13 TTABVUE
(“Plaintiff’s Notice of Reliance”) dated November 6, 2019.
2. The Parties understand and agree that … [Respondent] hereby
reserves its right to raise objections to Petitioner’s reliance on Mr.
Wiatrek’s discovery deposition pursuant to TBMP § 707 et seq.
3. By and through their attorneys …, the Parties have agreed and
stipulated to allow use of Mr. Wiatrek's discovery deposition as trial
evidence.
Subject to the Board’s approval, parties may enter into a wide variety of
stipulations concerning the admission of specified matter into evidence.
Notwithstanding such a stipulation, a party may reserve the right to object to
stipulated evidence on the grounds of competency, relevance, and materiality. Target
Brands Inc. v. Hughes, 85 USPQ2d 1676, 1678 (TTAB 2007). However, if a party has
not reserved the right to object, the party may not later raise evidentiary objections
once it has stipulated to the admissibility of that evidence. UMG Recordings Inc. v.
Mattel Inc., 100 USPQ2d 1868, 1875 (TTAB 2011) (counterproductive for applicant to
object to the submission of evidence to which it already provided a stipulation for
introduction).
Because Respondent stipulated “that the Parties may use as trial evidence the
discovery deposition of Derek Wiatrek,” Respondent’s objection to the admissibility of
the transcript and exhibits from this deposition is overruled. On the other hand,
according to Mr. Wiatrek’s own testimony, he has little familiarity with Respondent’s
EARTHLOCK product; including for what purposes it is used, or how it is promoted
and sold.13 We therefore do not consider any of Mr. Wiatrek’s discovery deposition or

13 Wiatrek Depo, 13 TTABVUE 19-22, 55-56.
Cancellation No. 92068730
- 8 -

exhibits pertaining to Respondent’s EARTHLOCK product, but find the deposition
transcript and exhibits admissible for all other purposes.
III. The Parties
Petitioner is the founder and Chief Executive Officer of New Earthlok, LLC.14
Petitioner supervises the entire business,15 and as his company is small and he runs
it, he has a general knowledge of all phases of its operations. Petitioner’s business is,
in part, to formulate, distribute, and inject a chemical stabilization material into soil
for residential, commercial, road, and rail construction companies. This material is
designed and the associated services are intended to keep the soil from swelling,
causing damage to structures, foundations, or road beds.16
Petitioner, through his company, provides soil stabilization products and services
to customers in multiple states.17 He claims use of the EARTHLOK mark in
connection with the promotion and sale of these products and services since 2007.18
Respondent is a manufacturer and provider of proprietary products and related
engineering services, used in the transportation, site development, construction,
mining, marine, environmental and other markets.19 Respondent develops and
manufactures products and engineered solutions for site development and
infrastructure, and provides a number of geosynthetic solutions for common

14 Green Decl, 17 TTABVUE 3, ¶ 2.
15 Id.
16 Id. at 3, ¶ 3.
17 Id. at 3, ¶ 5.
18 Id. at 3, ¶ 6.
19 Briggs Decl, 31 TTABVUE 4, ¶ 3.
Cancellation No. 92068730
- 9 -

earthwork challenges.20 Respondent claims use of the EARTHLOCK mark in
connection with construction, asphalt and concrete reinforcement products, soil
reinforcement mesh and soil stabilization products recited in its trademark
registration since at least as early as October 31, 2016.21
IV. Entitlement to a Statutory Cause of Action
Entitlement to a statutory cause of action is a threshold issue that must be proven
by the plaintiff in every inter partes case. Empresa Cubana Del Tabaco v. Gen. Cigar
Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). Petitioner must
maintain his entitlement to the statutory cause of action throughout the proceeding
and affirmatively prove it at the time of trial as an element of his case-in-chief. See
Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982); Apollo Med. Extr. Techs., Inc. v. Med. Extr. Techs., Inc., 123 USPQ2d 1844,
1848 (TTAB 2017); see also TBMP § 309.03(b) (“Allegations in support of standing
which may be sufficient for pleading purposes must later be affirmatively proved by
the plaintiff at trial (or on summary judgment).”).
To establish entitlement to a statutory cause of action under Trademark Act
Section 14, 15 U.S.C., § 1064, a plaintiff must demonstrate “an interest falling within
the zone of interests protected by the statute and … proximate causation.”
Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d 11277, at *4 (Fed. Cir.

20 Id. at 5, ¶ 4.
21 Briggs Decl, 31 TTABVUE 7-8, ¶ 12; Registration No. 5257580, EARTHLOCK NOR 15
TTABVUE 7-8.

Cancellation No. 92068730
- 10 -

2020) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 109
USPQ2d 2061, 2067-70 (2014)).22 Stated another way, a plaintiff is entitled to a
statutory cause of action by demonstrating a real interest in the proceeding and a
reasonable belief of damage. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM,
LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020); see also Empresa
Cubana, 111 USPQ2d at 1062. According to the U.S. Court of Appeals for the Federal
Circuit (“Federal Circuit”), there is “no meaningful, substantive difference between
the analytical frameworks expressed in Lexmark and Empresa Cubana.” Corcamore,
2020 USPQ2d 11277 at *4. Thus, “a party that demonstrates a real interest in
cancelling a trademark under [Trademark Act Section 14, 15 U.S.C.] § 1064 has
demonstrated an interest falling within the zone of interests protected by [the
Trademark Act]. … Similarly, a party that demonstrates a reasonable belief of
damage by the registration of a trademark demonstrates proximate causation within
the context of § 1064.” Corcamore, 2020 USPQ2d 11277 at *7.
“A petitioner may demonstrate a real interest and reasonable belief of damage
where the petitioner has filed a trademark application that is refused registration
based on a likelihood of confusion with the mark subject to cancellation.” Australian
Therapeutic, 2020 USPQ2d 10837, at *4. Consistent with the allegations made in its

22 Our decisions have previously analyzed the requirements of Trademark Act Sections 13
and 14, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” We now refer to this inquiry as
entitlement to a statutory cause of action. Despite the change in nomenclature, our prior
decisions and those of the Federal Circuit interpreting Trademark Act Sections 13 and 14
remain applicable.
Cancellation No. 92068730
- 11 -

Petition for Cancellation,23 Petitioner made of record the file history for his
EARTHLOK trademark application for “soil stabilizers for use in road construction,”
showing that this mark was refused registration on the ground of likelihood of
confusion with Respondent’s registered EARTHLOCK mark.24 Petitioner therefore
has adequately pleaded and demonstrated his entitlement to bring and maintain its
Trademark Act Section 2(d) claim.
V. Priority
“To establish priority, the petitioner must show proprietary rights in the mark
that produce a likelihood of confusion. … These proprietary rights may arise from a
prior registration, prior trademark or service mark use, prior use as a trade name,
prior use analogous to trademark or service mark use, or any other use sufficient to
establish proprietary rights.” Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156,
64 USPQ2d 1375, 1378 (Fed. Cir. 2002) (internal citations omitted); Otto Roth & Co.
v. Universal Foods Corp., 640 F.2d 1317, 1320, 209 USPQ 40, 43 (CCPA 1981).
Inasmuch as Petitioner has not pleaded ownership of any registered mark, he
must rely on his common law use of EARTHLOK as a trademark to prove priority.
“A party claiming prior use of a [common law mark similar to a] registered mark may
petition to cancel the registration on the basis of … [his] prior use pursuant to Section
14 of the Lanham Act. 15 U.S.C. Section 1064.” W. Fla. Seafood, Inc. v. Jet Rests.,
Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1662 (Fed. Cir. 1994). “[W]hether a particular

23 Petition for Cancellation, 1 TTABVUE 3, ¶ 3.
24 Application Serial No. 87675458, Office Action of March 3, 2018, EARTHLOK NOR 14
TTABVUE 15-25.
Cancellation No. 92068730
- 12 -

piece of evidence by itself establishes prior use is not necessarily dispositive as to
whether a party has established [such] prior use. … [We must] look at the evidence
as a whole, as if each piece of evidence were part of a puzzle which, when fitted
together, establishes prior use.” Id., 31 USPQ2d at 1663.
“[Petitioner]’s acquisition of common law rights to the term … [EARTHLOK] must
precede [Respondent]’s actual or constructive use of [its EARTHLOCK] mark.”
DeVivo v. Ortiz, 2020 USPQ2d 10153, *3 (TTAB 2020 (citing Larami Corp. v. Talk to
Me Programs, Inc., 36 USPQ2d 1840, 1845 (TTAB 1995)). “In other words, it is
[Petitioner]’s burden to demonstrate that [he] owns a trademark or service mark that
was used prior to [Respondent]’s first use or constructive use of [its] mark.” Id.
To establish priority, Petitioner’s mark must be distinctive, inherently or
otherwise, and Petitioner must show proprietary rights in his mark as to which
Respondent’s mark gives rise to a likelihood of confusion. Otto Roth, 209 USPQ at 43-
45. “Under the rule of Otto Roth [209 USPQ at 43], a party opposing registration of a
trademark due to a likelihood of confusion with his own unregistered term cannot
prevail unless he shows that his term is distinctive of his goods [or services], whether
inherently or through the acquisition of secondary meaning or through ‘whatever
other type of use may have developed a trade identity.” RxD Media v. IP Application
Development LLC, 125 USPQ2d 1801, 1808 (TTAB 2018) (quoting Towers v. Advent
Software Inc., 913 F.2d 942, 16 USPQ2d 1039, 1041 (Fed. Cir. 1990)). Here, however,
Respondent has not raised an issue as to the distinctiveness of Petitioner’s mark or
otherwise put Petitioner on notice of this defense, and therefore we find that
Cancellation No. 92068730
- 13 -

Petitioner’s EARTHLOK mark is distinctive. See Wet Seal Inc. v. FD Mgt. Inc., 82
USPQ2d 1629, 1634 (TTAB 2007) (absent argument or evidence from applicant,
opposer’s mark deemed distinctive).
Oral testimony, if sufficiently probative, is normally satisfactory to establish
priority of use, Powermatics, Inc. v. Globe Roofing Prods. Co., 341 F.2d 127, 144
USPQ 430, 432 (CCPA 1965), and the testimony of a single witness may be adequate
to establish priority. See Exec. Coach Builders, Inc. v. SPV Coach Co., Inc., 123
USPQ2d 1175, 1184 (TTAB 2017). Such testimony “should not be characterized by
contradictions, inconsistencies, and indefiniteness but should carry with it conviction
of its accuracy and applicability.” B.R. Baker Co. v. Lebow Bros., 150 F.2d 580, 66
USPQ 232, 236 (CCPA 1945); Nationstar Mortg. LLC v. Ahmad, 112 USPQ2d 1361,
1372 (TTAB 2014). Oral testimony, of course, is strengthened by corroborative
documentary evidence. Elder Mfg. Co. v. Int’l Shoe Co., 194 F.2d 114, 92 USPQ 330,
333 (CCPA 1952).
In the absence of evidence establishing earlier use of its mark, Respondent may
rely for priority purposes on the filing date of the application that matured into its
EARTHLOCK registration. See Trademark Act Section 7(c), 15 U.S.C. §1057(c); see
also Brewski Beer Co. v. Brewski Bros. Inc., 47 USPQ2d 1281, 1283-84 (TTAB 1998);
Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840 (TTAB 1995); Am.
Standard Inc. v. AQM Corp., 208 USPQ 840, 842 (TTAB 1980). Respondent’s
underlying application filing date to its EARTHLOCK registration is June 8, 2016.25

25 EARTHLOCK NOR, 15 TTABVUE 192-97.
Cancellation No. 92068730
- 14 -

Respondent claims use of the EARTHLOCK mark in connection with the products
recited in its trademark registration since at least as early as October 31, 2016.26
Respondent did not make of record any evidence of its use of the EARTHLOCK mark
prior to June 8, 2016. Therefore, to establish priority, Petitioner must demonstrate
trademark or service mark use of his EARTHLOK mark prior to June 8, 2016.
Petitioner claims use of the EARTHLOK mark in connection with the promotion
and sale of soil stabilization products and services since 2007.27 While Petitioner
provided a considerable amount of materials bearing the EARTHLOK mark with his
testimony declaration,28 many of these items are undated or bear a copyright date of
2017, which is after Respondent’s June 2016 priority date.
We can, however, piece together the following evidence of Petitioner’s use of the
EARTHLOK mark prior to Respondent’s priority date:
 New Earthlok LLC’s application to register with the State of Texas the mark
EARTHLOK SOIL STABILIZER and Globe with Chain Design in connection
with “chemicals that stabilize soil to reduce foundation shifting and swelling
clays.” The application was filed (accompanied by specimens of use) with the
Texas Secretary of State’s Office by Petitioner in the name of New Earthlok,
LLC. Petitioner filed the application on June 2, 2011, claiming first use of the
mark anywhere, and in Texas, at least as early as July 1, 2007. The Texas
trademark registration issued on June 2, 2011.29

26 Briggs Decl, 31 TTABVUE 7-8, ¶ 12; Registration No. 5257580, EARTHLOCK NOR 15
TTABVUE 7-8.
27 Green Decl, 17 TTABVUE 3, ¶¶ 5-6.
28 Id. at 7-136. These items include product labels, brochures, business cards, website pages
work truck and stationary signage, advertising specialty items and stationery materials and
clothing.
29 Id. at 124-30. We normally do not consider state registrations in determining a party’s
federal trademark rights, but here Applicant’s signed Texas state trademark application,
specimens of use and registration are probative because they contribute to the various
elements comprising the mosaic of Petitioner’s trademark priority under W. Fla. Seafood, 31
USPQ2d at 1662-63.
Cancellation No. 92068730
- 15 -

 Petitioner’s testimony that since 2010 his company has spent more than
$140,000 in advertising and promotions using the EARTHLOK mark.
Petitioner has expended these funds on exhibitions and trade organization
meetings to promote EARTHLOK products and services, to speak at such
events, and on social media platforms to communicate with Petitioner’s
customer base.30
 A white paper titled “Effect of Earthlok Chemical Injection of Soil to Reduce
Swell” dated April 26, 2011. The white paper provides the results of laboratory
testing of Petitioner’s EARTHLOK chemical soil injection product earlier that
year. Petitioner uses this white paper as part of his marketing materials.31
 Petitioner’s testimony that since 2013 his company’s annual sales of products
bearing the EARTHLOK mark have exceeded a million dollars.32
 Petitioner’s testimony, with supporting exhibits, that he and his company
employees presented information regarding EARTHLOK products and
services at a CAPEC (Capital Area Pavement Engineers Council) industry
meeting on January 23, 2014, at which Respondent’s employee, Derek Wiatrek
was present.33 During this CAPEC meeting in 2014, Mr. Wiatrek admitted that
he attended the EARTHLOK presentation and obtained Petitioner’s business
card as well as EARTHLOK sales information at the 2014 CAPEC meeting.34
When we look at the totality of this evidence through the lens of West Florida
Seafood, 31 USPQ2d at 1662-63, we find that, fitted together, it establishes
Petitioner’s use of the EARTHLOK mark prior to Respondent’s June 2016 priority
date for its EARTHLOCK mark. Respondent spends its time challenging Petitioner’s
priority by picking apart, item-by-item, the proofs Petitioner submitted as insufficient
to qualify as prior trademark use.35 Respondent’s arguments are contrary to the

30 Id. at 4, ¶ 8.
31 Id. at 103.
32 Id. 3, ¶ 7.
33 Id. at 4, 182-186, ¶¶ 9-10 and Exh H.
34 Wiatrek Depo, 13 TTABVUE 22-38, 70-94, Exhs 1-4
35 Respondent’s Brief, 37 TTABVUE 31-37.
Cancellation No. 92068730
- 16 -

directives of West Florida Seafood. Petitioner’s evidence, considered as a whole,
amounts to evidence of priority. This includes testimony as to use of the mark in
Texas dating back to 2007, product testing evidence from 2011, testimony regarding
advertising since 2010 and sales since 2013, as well as testimony and supporting
documents demonstrating specific use of the mark in connection with Petitioner’s
products and services at an industry meeting in 2014. Petitioner therefore has
demonstrated his priority based on the totality of the evidence, including through his
own testimony, Mr. Wiatrek’s testimony and documentary evidence.
VI. Likelihood of Confusion
Trademark Act Section 2(d) prohibits the registration of a mark that
[c]onsists of or comprises a mark which so resembles a mark registered
in the Patent and Trademark Office, or a mark or trade name previously
used in the United States by another and not abandoned, as to be likely,
when used on or in connection with the goods of the applicant, to cause
confusion, or to cause mistake, or to deceive.
Our analysis is based on all of the probative evidence of record. In re E.I. DuPont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (noting the
elements, or factors, to be considered). In making our determination, we consider each
DuPont factor for which there is evidence and argument. See In re Guild Mortg. Co.,
912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Varying weights may be
assigned to each DuPont factor depending on the evidence presented. See Citigroup
Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.
2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993)
(“[T]he various evidentiary factors may play more or less weighty roles in any
particular determination”).
Cancellation No. 92068730
- 17 -

In applying the DuPont factors, we bear in mind the fundamental purposes
underlying Trademark Act Section 2(d), which are to prevent confusion as to source
and to protect trademark owners from damage caused by registration of confusingly
similar marks. Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ
327, 331 (1985); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161,
1163 (1995); DuPont, 177 USPQ at 566.
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods or services. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)
(“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods and differences in the
marks.”). These factors, and the other DuPont factors argued by each party for which
there is evidence, are discussed below.
A. The Similarity or Dissimilarity of the Marks
We first consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression, See Palm Bay Imps.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 369 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005), the first DuPont factor. 177 USPQ at 567. “Similarity in
any one of these elements may be sufficient to find the marks confusingly similar.” In
re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 Fed.
Appx. 516 (Fed. Cir. 2019) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB
2014)).
Cancellation No. 92068730
- 18 -

“The proper test is not a side-by-side comparison of the marks, but instead
whether the marks are sufficiently similar in terms of their commercial impression
such that persons who encounter the marks would be likely to assume a connection
between the parties.” In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744,
1748 (Fed. Cir. 2017) (quoting Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal quotation marks omitted)).
The focus is on the recollection of the average purchaser – here, a construction
company desiring to purchase solutions for soil stabilization – which normally retains
a general rather than a specific impression of trademarks. In re Assoc. of the U.S.
Army, 85 USPQ2d 1264, 1268 (TTAB 2007).
Petitioner argues that Respondent’s EARTHLOCK mark “is materially identical”
to his EARTHLOK mark.36 Respondent argues that “any similarities between the
parties’ respective trademarks is of little consequence to either party.”37 We find the
visual difference between the parties’ marks is but one letter; the letter “c.” The
pronunciations of the marks are identical. In connection with at least the respective
products at issue (if not the services), the meaning of each mark is identical – whether
by chemical injection or insertion of plastic mesh – to “lock” soil (“earth”) in place to
reinforce and stabilize it. We therefore find that the parties’ marks are very similar
in appearance, sound, meaning and commercial impression, supporting the
conclusion that confusion is likely.

36 Petitioner’s Brief, 35 TTABVUE 16.
37 Respondent’s Brief, 37 TTABVUE 49.
Cancellation No. 92068730
- 19 -

B. The Similarity or Dissimilarity and
Nature of the Goods and Services
The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration or in connection
with which a prior mark is in use.” DuPont, 177 USPQ at 567. “This factor considers
whether ‘the consuming public may perceive [the respective goods and services of the
parties] as related enough to cause confusion about the source or origin of the goods
and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed.
Cir. 2014) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62
USPQ2d 1001, 1004 (Fed. Cir. 2002)).
Given that the parties’ marks are nearly identical, we need only find that a viable
relationship exists between the goods and services for purposes of finding a likelihood
of confusion. Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1471
(TTAB 2016) (with substantially identical marks it is only necessary that there be a
“viable relationship” to support a finding of likelihood of confusion) (quoting L’Oreal
S.A. v. Marcon, 102 USPQ2d 1434 (TTAB 2012)). Moreover, “[e]ven if the goods and
services are not identical or specifically related in kind, they may be sufficiently
related in the mind of the consuming public to cause confusion concerning the source
or origin of the goods and services.” Herbko Int’l, 64 USPQ2d at 1381.
To determine the relationship between the parties’ goods and services, we are
bound by the identification in Respondent’s EARTHLOCK Registration. See Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918
Cancellation No. 92068730
- 20 -

F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the
question of [continued] registrability of … [a registrant’s] mark must be decided on
the basis of the identification of goods set forth in the … [registration] regardless of
what the record may reveal as to the particular nature of … [the registrant’s] goods,
the particular channels of trade or the class of purchasers to which the sales of goods
are directed.”).
On the other hand, because Petitioner does not rely on a registration, we consider
the relationship of Respondent’s identified goods with those goods and services on or
in connection with which Petitioner has established use of its mark. Hewlett-Packard
v. Packard Press, 62 USPQ2d at 1004. (“Another [relevant] DuPont factor … is the
‘similarity or dissimilarity and nature of the goods or services as described in … [a]
registration … [and those] in connection with which a prior mark is in
use.’ DuPont, 476 F.2d at 1361. [Here, t]his ‘relatedness of the goods’ factor [includes
those goods and services] … the consuming public may perceive … as related enough
to cause confusion about the[ir] source or origin ….”).
One of Petitioner’s brochures succinctly describes his EARTHLOK product and
related services:38
EARTHLOK ROAD SUBGRADE TREATMENT is an ionic soil
stabilization product that reduces the swell potential of expansive clay
soils. Additional benefits include increases in density, strength and
reduction in hydraulic conductivity and soil suction. Swelling clays are

38 Green Decl, 17 TTABVUE 8-9. According to Petitioner’s numerous additional brochures he
made of record, his EARTHLOK products and services may be used in the construction of
airports, commercial facilities, highways, railroads, residential structures and swimming
pools. Id. at 41-58, 92-93.
Cancellation No. 92068730
- 21 -

a very common problem that causes distress and cracking in subgrades
for roads, highways, parking lots, railroads and more.
By treating the soils with EARTHLOK ROAD SUBGRADE
TREATMENT you turn wet, unsuitable soil that you would typically
haul off site and waste, into usable dry fill. This process enables you to
leave it in place and treat it, instead of paying for the excavation and
removal of unusable soil. EARTHLOK has the ability to determine the
proper mixture for your specific soil and makes us your ideal choice for
stabilization. Moisture conditioning with EARTHLOK is also a process
that will hold durability and protection during the summer and winter
months. EARTHLOK ROAD SUBGRADE treatment in its diluted form
is non-hazardous, earth-friendly on the environment and will not harm
plants vegetation or aquatic life.
As noted, Respondent’s EARTHLOCK registration recites the following goods:
Plastic sheet materials for construction; plastic mesh materials for
asphalt and concrete reinforcement, and construction of civil
engineering structures, in International Class 17, and
Soil reinforcement mesh and soil stabilization mesh made of plastic; soil
erosion control structures, namely, gabions and mattresses constructed
of plastic mesh; plastic mesh material for construction of civil
engineering structures, in International Class 19.
Petitioner urges that “the different solutions to soil stabilization offered by …
[Respondent] and … [Petitioner] can often [be] employed to stabilize the soil in the
same location” … and “even accepting any limitations of chemical injection
approaches or any limitations to the mechanical reinforcement by … [Respondent’s]
approach, both mechanical and chemical solutions can be employed in many
situations.”39
Respondent argues that the parties’ products/services are different:
[Respondent’s] EARTHLOCK geogrid products40 … are tensile elements
that physically interlock with gravel, soil and other aggregates within

39 Green Rebuttal Decl, 34 TTABVUE 4, ¶ 7.
40 “Integral geogrids in general are a type of specialty construction product[] used in civil and
geotechnical engineering applications. Their purpose is to stabilize and reinforce soils and
Cancellation No. 92068730
- 22 -

the geogrid open spaces to reinforce the aggregate and the EARTHLOK
chemical additive products and services offered by … [Petitioner], which
simply serve to stabilize existing soil conditions. This distinction
between physical reinforcement and chemical stabilization is well
recognized within the industry.41
[C]hemical stabilization, such as … [Petitioner’s] EARTHLOK chemical
stabilization, treats an existing soil condition for the purpose of altering
the properties of that soil. In contrast, integral geogrids, such as …
[Respondent’s] EARTHLOCK geogrids are installed on top of an existing
soil and then additional soil or gravel is placed on top of the geogrid
which then reinforces and stabilizes the soil or gravel on top of the
geogrid, and making it possible construct on top of the existing soft soils
below the geogrid. … [Petitioner’s] EARTHLOK chemical stabilization
alters the properties of the soil by the injection of chemicals, whereas …
[Respondent’s] EARTHLOCK geogrids do not.42
The problem with Respondent’s argument is that, “[w]hen analyzing the similarity
of the goods [or services], ‘it is not necessary that the products of the parties be similar
or even competitive to support a finding of likelihood of confusion.’ … Instead,
likelihood of confusion can be found ‘if the respective products [or services] are related
in some manner and/or if the circumstances surrounding their marketing are such
that they could give rise to the mistaken belief that they emanate from the same
source.’” Coach Servs., 101 USPQ2d at 1722 (internal citation omitted). For example,
“[i]f the products serve the same purposes … or are used for similar purposes, the

aggregate and improve the engineering properties and behavior of soils and aggregates – this
functionality … allows for roads, walls, slopes and other forms of built earthen infrastructure
to be constructed more cost effectively and to last longer. Integral geogrids are a sheet-like
material that also has openings (called apertures) in the sheet, forming an open-mesh
structure. The open-mesh structure, and the strength and stiffness of the geogrids allow the
geogrid to physically interlock with the soils and aggregates – this is how the geogrid
improves the soils and aggregate.” Cavanaugh Decl, 32 TTABVUE 7, ¶ 11.
41 Briggs Decl, 31 TTABVUE 9, ¶ 14.
42 Cavanaugh Decl, 32 TTABVUE 12, ¶¶ 20-21.
Cancellation No. 92068730
- 23 -

likelihood of confusion is greater.” Nikon Inc. v. Ikon Corp., 987 F.2d 91, 25 USPQ2d
2021, 2024 (2d Cir. 1993); see also Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 224
USPQ 185, 194 (4th Cir. 1984) (likelihood of confusion found where, inter alia, “it is
obvious that the products and services provided by the two companies serve the same
purpose.”).
Comparing Petitioner’s EARTHLOK products and services to Respondent’s
EARTHLOCK products identified in its registration, it is evident that they are used
for the same purposes, namely, soil stabilization and reinforcement. Whereas
Petitioner’s is a chemical solution, Respondent’s is a mechanical one. Moreover, as
noted, the parties’ marks here are nearly identical. We therefore need only find, and
we do find, that a viable relationship exists between Petitioner’s goods and services
and Respondent’s goods. Of course, the ultimate question is whether the goods and
services are related in such a way that consumers seeing them sold under the same
or similar marks would think they came from the same or a related source. We find
that is the case here. The second DuPont factor, the similarity of the goods and
services and their nature, further supports a conclusion that confusion is likely.
C. The Similarity or Dissimilarity of Established, Likely-To-
Continue Trade Channels
Our consideration of “established, likely-to-continue trade channels,” the third
DuPont factor, 177 USPQ at 567, requires us to examine the evidence of record
pertaining to the parties’ advertising media, types of target purchasers, and avenues
of advertising and sales. Century 21 Real Estate Corp. v. Century Life of Am., 970
Cancellation No. 92068730
- 24 -

F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Our focus on this factor begins once
more with the identification of goods in Respondent’s EARTHLOCK registration:
It … [is] proper … for the Board to focus on the [goods identified in the]
registration[] rather than on real-world conditions, because the question
of registrability … must be decided on the basis of the identification of
goods set forth in the … [registration]. … This is so regardless of what
the record may reveal as to the particular nature of … [a registrant’s]
goods, the particular channels of trade or the class of purchasers to
which sales of the goods are directed. … [A registration] with no
restriction on trade channels cannot be narrowed by testimony that the
… [registrant’s] use is, in fact, restricted to a particular class of
purchasers.
Stone Lion, 110 USPQ2d at 1162 (cleaned up, internal citations omitted). As to
Petitioner, we look at the channels of trade for its products and services as established
by the evidence.
We start with the observation that there are no limitations on the channels of
trade for Respondent’s identified products or the class of purchasers to whom those
products are directed. Under these circumstances, Respondent’s goods are assumed
to travel in all normal channels of trade for such goods and to reach the usual classes
of purchasers of those goods. Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d
1352, 56 USPQ2d 1351, 1357 (Fed. Cir. 2000).
Respondent attempts to distinguish the channels of trade for the respective goods
and services as follows:
[Respondent’s] EARTHLOCK geogrids are marketed and sold by retail
establishments geared to the DIY homeowner or small contractor
market for small scale projects. The retail markets for … [Respondent’s]
EARTHLOCK geogrids are, primarily, by online through Home Depot
and Amazon. In contrast, Petitioner promotes his EARTHLOK chemical
products and services through direct promotion and sales targeted to
Cancellation No. 92068730
- 25 -

large-scale applications such as highways, railroads, new and other
commercial construction projects.43
This argument does not assist Respondent. As Respondent’s registration contains no
limiting language, we find that that the channels of trade for Respondent’s products
includes both the professional and consumer markets. Petitioner offers his products
to residential, commercial, road, and rail construction companies via his website,
information pamphlets and other paper marketing materials, and by presentations
at professional industry meetings.44 As a result, an overlap exists between
Petitioner’s products and services and Respondent’s products. Bose Corp. v. QSC
Audio Prods., Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1311 (Fed. Cir. 2002).
Further, the parties have attended, participated in and exhibited as vendors at
three separate trade organization meetings, the ACEA (“Greater Austin Contractors
& Engineers Association”) the CAPEC (“Capital Area Pavement Engineers Council”),
and the FPA (“Foundation Performance Association”). Petitioner provided detailed
evidence of the parties’ participation in these meetings, including exhibitor and
attendee lists, topic and speakers’ agenda, and exchanges of correspondence.45
Our evaluation of the similarity of trade channels, the third DuPont factor, also
weighs in favor of finding a likelihood of confusion.

43 Respondent’s Brief, 37 TTABVUE 46, citing Briggs Decl, 31 TTABVUE 6-7, 47-69, ¶¶ 9-10,
Exhs 3-6; Blackwelder Decl, 33 TTABVUE 4-5, ¶ 3; Cavanaugh Decl, 32 TTABVUE 10-11;
Green Decl, 17 TTABVUE 45-58.
44 Green Decl, 17 TTABVUE 3-4, ¶¶ 3, 4, 9.
45 Green Decl, 17 TTABVUE 4, 176-86, ¶¶ 9-10, Exh H; Wiatrek Depo, 13 TTABVUE 22-38,
45-50, 52, 70-98, 102-123, Exhs 1-5, 7-8.
Cancellation No. 92068730
- 26 -

D. Sales Conditions and Buyers to whom Sales are made, i.e.
“Impulse” vs. Careful, Sophisticated Purchasing
The fourth DuPont factor is the “conditions under which and buyers to whom sales
are made, i.e. ‘impulse’ vs. ‘careful, sophisticated purchasing.” DuPont, 177 USPQ at
567. Precedent requires that we base our decision on the least sophisticated potential
purchasers. Stone Lion, 110 USPQ2d at 1163.
Respondent makes much of the following statement Petitioner made in his
Petition for Cancellation, noting Respondent’s agreement with the statement and
arguing that this “agreed fact” negates a finding of likely confusion:46
Petitioner asks this Board to recognize that sophisticated organizations
purchase the products and services of the Registrant and Applicant [sic]
and few people in the industry would confuse the services and products
provided by the Applicant [sic] with those of the Registrant and allow
Petitioner’s Mark to complete registration.47
Petitioner does not address the fourth DuPont factor in his opening or rebuttal briefs.
Notwithstanding the parties’ apparent “agreement” that their respective products
and services are purchased and used by sophisticated buyers, there is no actual
evidence of customer sophistication in the record. “The appropriate level of customer
care and sophistication can be proven by: (1) survey evidence; (2) expert testimony;
or (3) inferences drawn by a judge based on the nature of the product or its price.”
McCarthy, T. J., MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23:95 (5th
ed., March 2021 update) (citing Star Indus., Inc. v. Bacardi & Co. Ltd., 412 F.3d 373,
75 USPQ2d 1098, 1108 (2d Cir. 2005).

46 Respondent’s Brief, 37 TTABVUE 47
47 Petition for Cancellation, 1 TTABVUE 4, ¶ 9.
Cancellation No. 92068730
- 27 -

Even if we credit the parties’ apparent “agreement” regarding customer
sophistication, or infer such sophistication based on the nature of the parties’
products and services, it is well-settled that even careful or sophisticated purchasers
who are knowledgeable as to the goods or services are not necessarily knowledgeable
in the field of trademarks or immune to source confusion arising from the use of very
similar marks on or in connection with goods and services. See In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993); In re Davey Prods. Pty Ltd.,
92 USPQ2d 1198, 1204 (TTAB 2009). We find the fourth DuPont factor, sales
conditions and purchaser sophistication, weighs slightly against a conclusion that
confusion is likely.
E. Facts of Record Concerning Actual Confusion, and their
Significance
The seventh DuPont factor is the “nature and extent of any actual confusion,”
while the eighth DuPont factor considers the “length of time during and conditions
under which there has been concurrent use without evidence of actual confusion.”
DuPont, 177 USPQ at 567. In its decision on remand from the Federal Circuit’s
decision in In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160 (Fed. Cir. 2019),
the Board recently held that the eighth DuPont factor “requires us to look at actual
market conditions, to the extent there is evidence of such conditions of record.” In re
Guild Mortg., 2020 USPQ2d 10279, *15 (TTAB 2020).
Cancellation No. 92068730
- 28 -

As noted, Petitioner claims use of the EARTHLOK mark in connection with his
products and services since 2007.48 At the very least, we have Petitioner’s testimony
that he has been using EARTHLOK as a trademark since 2010.49 Respondent claims
use of the EARTHLOCK mark in connection with the products recited in its
trademark registration since at least as early as October 31, 2016.50 Thus by the time
their testimony periods had closed in February 2020,51 the parties had been
concurrently using their respective marks for three and one-quarter years. Within
that time, the parties both had attended three of the same trade organization
meetings.52
Petitioner also made of record the following communications demonstrating what
it asserts are incidents of actual confusion:53

48 Green Decl, 17 TTABVUE 3, ¶ 6.
49 Id. at 4, ¶ 8.
50 Briggs Decl, 31 TTABVUE 7-8, ¶ 12; Registration No. 5257580, EARTHLOCK NOR 15
TTABVUE 7-8.
51 See Board Order of July 3, 2019, 12 TTABVUE 14, setting forth the final trial schedule for
this proceeding.
52 Green Decl, 17 TTABVUE 4, 176-86, ¶¶ 9-10, Exh H; Wiatrek Depo, 13 TTABVUE 22-38,
45-50, 52, 70-98, 102-123, Exhs 1-5, 7-8.
53 Petitioner’s Brief, 35 TTABVUE 11; Petitioner’s Rebuttal Brief, 38 TTABVUE 13; examples
“a.” and “b.” are from Ford Decl I, 16 TTABVUE 3-4, ¶ 7 and Green Decl, 17 TTABVUE 5, ¶
15. Petitioner did not need to submit the same evidence twice. Example “c.” is from Ford Decl
II, 26 TTABVUE 3, ¶ 3.
Cancellation No. 92068730
- 29 -

a. A phone call received by Petitioner on October 8, 2018 from an individual
looking for the Respondent’s product, who was directed to Petitioner’s office:
b. An email received by Petitioner on March 27, 2019 from an individual looking
for Respondent’s product who was directed to Petitioner’s office:

Cancellation No. 92068730
- 30 -

c. A phone call received by Petitioner on March 2, 2020 from an individual that
googled “EARTHLOK” but was intending to find Respondent’s EARTHLOCK
geogrid product:

Both parties cite to Dan Foam ApS v. Sleep Innovations, Inc., 106 USPQ2d 1939
(TTAB 2013), Respondent asserting the decision supports its position that the records
of these calls and email correspondence are inadmissible as hearsay without a
recognized exception; Petitioner asserting the decision supports its position that this
evidence is admissible. Respondent’s position, unfortunately, results from an
incomplete quotation from and thus misleading reliance on the decision. Petitioner is
correct that Dan Foam supports the admissibility of these records under the
“present-sense impression” hearsay exception under Fed. R. Evid. 803(1) or the “state
of mind” hearsay exception under Fed. R. Evid. 803(3). Id. at 1943. On the other hand,
as Dan Foam also notes, these calls and email correspondence “are of little probative
Cancellation No. 92068730
- 31 -

value in the absence of testimony from the … [declarants] themselves as to whether
they were confused and, if so, what caused their confusion.” Id. at 1944 (citing Corp.
Fitness Programs Inc. v. Weider Health & Fitness Inc., 2 USPQ2d 1682, 1690-
91 (TTAB 1987)).54
While evidence of actual confusion may be considered in the DuPont analysis, “a
showing of actual confusion is not necessary to establish a likelihood of confusion.”
Herbko Int’l, 308 F.3d 1156, 64 USPQ2d at 1380 (citing Giant Food, Inc. v. Nation’s
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 296 (Fed. Cir. 1983)). Three
documented instances of apparent actual confusion may not be particularly high, but
it is not insignificant either. Overall, we find the seventh and eighth DuPont factors,
the facts of record and their significance concerning actual confusion, to be neutral
regarding our analysis of the likelihood of confusion.
VII. Conclusion regarding Likelihood of Confusion
We find the parties’ marks are highly similar. The parties’ goods and services,
and their nature, are at least related, can be used for similar purposes, and travel in
overlapping trade channels. The evidence regarding sales conditions and purchaser
sophistication is outweighed by the similarity of the marks as well as the overlapping
nature of the parties’ goods and services. The factors regarding actual confusion are
neutral. Weighing these DuPont factors under the circumstances presented, On-Line

54 See also Georgia-Pacific Corp. v. Great Plains Bag Co., 614 F.2d 757, 204 USPQ 697, 701
(CCPA 1980) (“[E]vidence showing actual confusion is only hearsay and entitled to little
weight. It is offered to prove the state of mind of a third party (concerning confusion between
the two marks) ….”)

Cancellation No. 92068730
- 32 -

Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1476 (Fed. Cir.
2000) (affirming the Board’s analysis of and weight given to the evidence concerning
the likelihood-of-confusion factors), we find that source confusion between the parties’
EARTHLOK and EARTHLOCK marks, and their respective products and services, is
likely.
Decision:
The Petition for Cancellation is granted.